Federal Circuit disposition — 24-141

N OTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In Re ZEBRA TECHNOLOGIES CORPORATION,
Petitioner
______________________
2024-141
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:23-
cv-00292-ADA, Judge Alan D. Albright.
______________________
ON PETITION
______________________
Before P ROST , BRYSON , and HUGHES , Circuit Judges.
P ER CURIAM .
O R D E R
Zebra Technologies Corporation petitions for a writ of
mandamus directing the United States District Court for
the Western District of Texas (“WDTX”) to transfer the ac-
tion to the United States District Court for the Eastern Dis-
trict of New York (“EDNY”). Intellectual Ventures I LLC
and Intellectual Ventures II LLC (collectively, “IV”) op-
pose.
Case: 24-141 Document: 23 Page: 1 Filed: 11/13/2024

-- 1 of 5 --

IN RE ZEBRA TECHNOLOGIES CORPORATION 2
I.
IV brought this suit in WDTX asserting that Zebra’s
accused products (tablets, computers, and other mobile de-
vices) infringe two patents based on compliance with the
802.11n/ac/ax Wi-Fi standards and/or the LPDDR4/4X/5
standards for memory data exchange. Zebra moved to
transfer the case to EDNY under 28 U.S.C. § 1404(a). On
July 9, 2024, the district court entered an order denying
the motion.
After determining that the action could have been
brought in EDNY, the court analyzed the public- and pri-
vate-interest factors relevant under § 1404(a). The district
court determined the compulsory process factor weighed
against transfer given the “volume and relevancy” of third-
party potential witnesses in WDTX compared to EDNY,
but discounted “the weight of this factor because neither
party has sufficiently shown that the non-party witnesses
would be unwilling to testify.” Appx0034. Having identi-
fied Zebra employees with relevant and material infor-
mation in both forums, the district court further
determined that the cost of attending proceedings for the
identified willing witnesses was not materially different
between the forums.
The district court acknowledged that the sources-of-
proof factor slightly favored transfer and the local interest
factor also favored EDNY over WDTX. However, because
keeping this case in WDTX with a co-pending IV action in-
volving the same patents could preserve judicial economy,
the court found that the practical problems factor weighed
against transfer. It found the remaining factors neutral.
On balance, the court determined Zebra had failed to show
EDNY was a clearly more convenient venue than WDTX
and therefore denied the motion. This petition followed.
We have jurisdiction under 28 U.S.C. §§ 1295(a)(1) and
1651(a). See In re Princo Corp., 478 F.3d 1345, 1351 (Fed.
Cir. 2007).
Case: 24-141 Document: 23 Page: 2 Filed: 11/13/2024

-- 2 of 5 --

IN RE ZEBRA TECHNOLOGIES CORPORATION 3
II.
“In general, three conditions must be satisfied for a
writ to issue: (1) the petitioner must demonstrate a clear
and indisputable right to issuance of the writ; (2) the peti-
tioner must have no other adequate method of attaining
the desired relief; and (3) the court must be satisfied that
the writ is appropriate under the circumstances.” In re Ap-
ple Inc., 979 F.3d 1332, 1336 (Fed. Cir. 2020) (citing Cheney
v. U.S. Dist. Ct. for D.C., 542 U.S. 367, 380–81 (2004)). Un-
der this highly deferential standard, we will not disturb a
transfer decision unless a petitioner has shown there is
such a “clear” abuse of discretion that it produced a “pa-
tently erroneous result.” Id. (quoting In re Volkswagen of
Am., Inc., 545 F.3d 304, 310 (5th Cir. 2008) (en banc)).
Zebra has not met this demanding standard.
Zebra’s contention that the district court erred in not
weighing the willing witness factor strongly in favor of
transfer is undermined by its own transfer motion. While
emphasizing that its engineering divisions for nearly all
the accused products are based in New York or Ontario,
Zebra acknowledged that IV’s infringement allegations
“are directed squarely” at “Wi-Fi and memory standards
implemented by the Accused Chipsets” “developed not by
Zebra, but rather by third parties”—Qualcomm and Syn-
aptics—based in California. Appx135, 140 (emphasis omit-
ted). Moreover, the district court afforded weight to the
four Zebra employees in EDNY identified as having rele-
vant and material information to the case. But the court
found at least seven Zebra employees in WDTX also had
relevant and material knowledge. Ultimately, the district
court concluded that Zebra had failed to show that transfer
would result in any material increase in convenience for
Case: 24-141 Document: 23 Page: 3 Filed: 11/13/2024

-- 3 of 5 --

IN RE ZEBRA TECHNOLOGIES CORPORATION 4
the witnesses and parties. Zebra has not shown clear error
in that conclusion.1
Zebra also challenges the district court’s compulsory
process factor analysis. Zebra had argued this factor fa-
vored transfer based on three third-party prior art wit-
nesses in EDNY. The district court disagreed, finding
those potential witnesses in EDNY are “far outweighed by
the volume and relevancy of the former Zebra employees,
Qualcomm witnesses, and Wi-Fi Alliance employees resid-
ing in this district.” Appx0034. Zebra argues the district
court clearly abused its discretion because IV relied in part
on LinkedIn profiles to identify third-party individuals in
WDTX as potential witnesses. But it fails to show a basis
for such a categorical prohibition. See In re Apple Inc., No.
2023-135, 2023 WL 5274629, at *2 (Fed. Cir. Aug. 16,
2023). In the end, the district court declined to assign sig-
nificant weight to this factor because the parties had not
identified any unwilling witness in either forum. Zebra has
not shown any sufficient reason to disturb these findings.
Finally, Zebra challenges the district court’s analysis of
the factor considering practical problems that make trial of
a case easy, expeditious, and inexpensive. The district
court concluded this factor weighed against transfer based
on potential judicial economy benefits to having this case
and a co-pending case involving the same patents be
1 Zebra points out that before the district court it ar-
gued that the Texas-based employees are irrelevant be-
cause IV had agreed not to pursue infringement
contentions against the specific accused products designed
by Zebra’s WDTX office. Zebra contends that the district
court ignored this argument. But Zebra’s petition fails to
show that the Texas-based employees had no relevant and
material information based on their knowledge and work
with other, still-accused products.
Case: 24-141 Document: 23 Page: 4 Filed: 11/13/2024

-- 4 of 5 --

IN RE ZEBRA TECHNOLOGIES CORPORATION 5
adjudicated before the same court. Zebra fails to point to
any specific errors in the court’s findings and instead ar-
gues that these gains in judicial economy are not sufficient
to justify overriding any inconvenience to the parties and
witnesses in keeping this case in WDTX. Because Zebra
fails to point to any specific error in the court’s assessment
of this factor, and because we cannot say that Zebra has
made a compelling showing on the other factors, we con-
clude that Zebra has not shown the district court’s balanc-
ing of the transfer factors was so unreasonable as to
warrant mandamus.
Accordingly,
I T I S O RDERED T HAT :
The petition is denied.
November 13, 2024
Date
F OR THE COURT
Case: 24-141 Document: 23 Page: 5 Filed: 11/13/2024

-- 5 of 5 --